It seems that a new system of unitary patent will start functioning soon indeed. One of the main pending crucial issues has been finally discussed and revealed. At its last 14th meeting, which took place on the 24-25 February 2016, the Preparatory Committee agreed the Rules on Court fees and recoverable costs for the Unified Patent Court (UPC). The Rules will be still subject to legal scrubbing but, in the interests of transparency and to keep users updated on the current work programme of the Committee, they have been published in their current form, alongside an Explanatory Note, and can be found here.

One of the major news is related to opt out fee. When the UPC comes into force, all “traditional” European patents will automatically fall under the jurisdiction of the UPC, unless the proprietor “opts-out”. This was one of the options that was being considered (other was to apply 80 € fee) and now has been confirmed that there will be no fee to opt out of the jurisdiction of UPC. This will allow patent holders to decide freely whether they want to be part of UPC system or not.

As it was previously announced, the UPC fee will be made up of a fixed fees and a “value-based” fee for actions where the value is above 750,000 €. Regarding the fixed and value based fees of Court of First Instance, no significant changes have been announced. The current version does not vary substantially from the version proposed on earlier. The table of the main fixed fees is below:

Action

Fixed fee (€)

Infringement action

11,000

Counterclaim for infringement

11,000

Action for declaration of non-infringement

11,000

Action for compensation for license of right

11,000

Application to determine damages

3,000

Other counterclaims pursuant to Article 32(1)(a) UPCA

11,000

Revocation action

20,000

Counterclaim for revocation

same fee as the infringement action subject to a fee limit of 20,000

Application for provisional measures

11,000

Action against a decision of the EPO

1,000

Concerning the value based fees of Court of First Instance and Court of Appeal, two more values of actions were added: up to and including 50, 000 000 and more than 50, 000 000 €.

Previously one fixed fee only for of 16, 000 € for the Appeal has been indicated in consultation document. Now these fees are set:

Also it has been confirmed that only one fixed and one value-based fee will be applied in action which has more than one claimant and/or more than one defendant or if an action concerns a plurality of patents.

It will be provided discount for small enterprises and micro-enterprises: these enterprises will pay 60% of all Court Fees (fixed and value-based) which will be incurred at the Court of First Instance as well as at the Court of Appeal.

Furthermore, reimbursements of fixed and value-based fees will be possible for all applicants in such cases: a) If the action is heard by a single judge (Rule 345.6.); b)In case of the withdrawal of an action (Rule 265); c) If the parties have concluded their action by way of settlement. Also it is important to know that „Only one of the reimbursements referred to in subsection (a), (b) and (c) will apply per action and party. Where more than one reimbursement is applicable, the larger will be applied for each party.“

Preparatory Committee of the UPC has also agreed a scale of ceilings for recoverable costs. Recoverable costs have been reduced comparing to previous proposal: when the lowest value of the proceeding is up to 250,000 € ceiling for recoverable costs will be up to 38,000 € (this is down from 50,000 € in the previous proposal) and when the highest value of the proceeding is more than 50,000 000 € ceiling for recoverable costs will be up to 2,000 000 € (this is down from 3, 000 000€ in the previous proposal).

It is also worth noting that, according to Preparatory Committee, this proposal on Court Fees and recoverable costs provides a delicate balance of Member States’ views, comments made in responses to the consultation over the summer and recommendations from the UPC Expert Panel. The proposal must still be subject to legal checking.